In 2013, defendants won summary judgment on two dental implant patents. One patent was found invalid because it had been in public use more than one year before the patent application was filed. The second patent was found invalid because a critical claim limitation – one suggested by the examiner to overcome the prior art – was found not to be supported by the specification.

Implant Direct, sued only for infringing the second patent, sought attorney’s fees under § 285. Judge Buchwald, reviewing post-Octane decisions, “extracted the following standards to guide our determination.” Octane directs courts “to consider a nonexclusive list of factors, including frivolousness, motivation, objective unreasonableness (both in the factual and legal components of the case) and the need in particular circumstances to advance consideration of compensation and deterrence.”

Baselessness – “courts are more likely to award fees where a party knew or willfully ignored evidence of his claims’ meritlessness, where such meritlessness could have been discovered by basic pre-trial investigation, or where such meritlessness is made clear to the court early in the litigation,” citing to Lumen View v. Findthebest.com (awarding fees), Kilopass Tech. v. Sidverse (awarding fees), and H-W Tech. v. Overstock.com (denying fees)

Good faith – ‘where a party has set forth some good faith argument in favor of its position, it will generally not be found to have advanced ‘exceptionally meritless claims,’” citing to EON Corp v. Cisco (denying fees) and Gametek v. Zynga (denying fees)

Need for the deterrent impact – “the need for the deterrent impact of a fee award is greater where there is evidence that the plaintiff is a ‘patent troll’ or has engaged in extortive litigation,” citing Lumen View v. Findthebest.com (awarding fees), Yufa v. TSI Inc. (awarding fees)

In this case, the court said that the “failure of Small’s claims was not readily apparent at the time Small initiated the action.” The original specification of the second patent contained some support for the limitation ultimately found unsupported, and the court noted that the unsupported limitation had been suggested by the patent examiner, “who supplied Small with the language of the claim and thereby implied that it was sufficient to support a reissue patent.”

The court also concluded that the first patent’s invalidity did not affect Implant Direct’s request for fees, as Implant Direct had never been a party to an action on that patent. Further, the consolidation of a case involving the first patent with Implant Direct’s case did not “entitle Implant [] to recover for a defense it did not undertake,” citing King Pharm. v. Eon Labs.

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